Ex Parte Westphal

Patent Trials and Appeals Board

Jun 24, 2019

13530659 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/530,659 06/22/2012 Geoffry A. Westphal
34018 7590 06/26/2019
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
31083.28US2 5627
EXAMINER
SCHNIREL, ANDREW B
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
06/26/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chiipmail@gtlaw.com
j arosikg@gtlaw.com
clairt@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFRY A. WESTPHAL
Appeal2018-004138
Application 13/530,659
Technology Center 2600
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1,2 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejections of claims 18, 21-24, 27, 28, and 34--39. Appeal Br. 1. This
appeal returns to us from a prior Board decision, Appeal No. 2015-007943,
mailed on May 10, 2017. In that decision, we affirmed the rejections of
claims 18, 21-24, 27, 28, and 34--39. For this appeal, we affirm.
1 Throughout this opinion, we refer to the Non-Final Action (Non-Final
Act.) mailed July 14, 2017, the Appeal Brief (Appeal Br.) filed September
27, 2017, the Examiner's Answer (Ans.) mailed January 11, 2018, and the
Reply Brief (Reply Br.) filed March 9, 2018.
2 Appellant identifies the real party in interest as W.W. Grainger, Inc.
Appeal Br. 2.
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Application 13/530,659
Invention
Appellant's invention relates to input devices for computers, including
a computer mouse that provides a touchless input interface. Spec. 1 :9. In
one embodiment, a mouse (e.g., 100) has sensor subsystems (e.g.,
114L/114R) that sense surface movements (e.g., user's finger movements)
representing finger gestures, such as finger taps or swipes, proximate to one
or both sides of the mouse. Spec. 4:22-5:3, 5:7-18, Figs. 1-2. These sensed
movements may be used by a computer to cause (1) locations on a computer
display to be pointed to or (2) information on the computer display to be
moved and/or selected. Spec. 5:15---6:22.
Independent claim 18 reads as follows:
18. A computer input device, comprising:
a housing in which is carried a main processing circuit;
a memory having instructions for controlling operations
of the processing circuit;
a first integrated touchless sensor subsystem, having a
first sensor processing unit, in communication with the main
processing circuit sensing a direction of movement of a first
user finger in each of three dimensions relative to the computer
input device occurring in spaced proximity to the computer
input device and providing to the main processing circuit a first
signal having data indicative of the sensed three-dimensional
direction of movement of the first user finger relative to the
computer input device occurring in spaced proximity to the
computer input device;
a second integrated touchless sensor subsystem, having a
second sensor processing unit, in communication with the main
processing circuit sensing a direction of movement of a second
user finger in each of three dimensions relative to the computer
input device occurring in spaced proximity to the computer
input device and providing to the main processing circuit a
second signal having data indicative of the sensed three-
dimensional direction of movement of the second user finger
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relative to the computer input device occurring in spaced
proximity to the computer input device; and
a transmission circuit under control of the main
processing circuit wherein the main processing circuit causes
the transmission circuit to transmit to a computer a
communication having both the data indicative of the sensed
three-dimensional direction of movement of the
first user finger relative to the computer input device occurring
in spaced proximity to the computer input device that was
provided to the main processing circuit by the first signal and
the data indicative of the sensed three-dimensional direction of
movement of the second user finger relative to the computer
input device occurring in spaced proximity to the computer
input device that was provided to the main processing circuit by
the second signal and wherein the first and second integrated
touchless sensor subsystems are disposed on opposed sides of
the housing of the computer input device.
Appeal Br. 9--10 (Claims App'x).
THE LACK OF WRITTEN DESCRIPTION REJECTION
The Examiner rejected claims 18, 21-24, 27, 28, and 34--39 under
35 U.S.C. § 112(a) or 35 U.S.C. § 112, first paragraph (pre-AIA), as failing
to comply with the written description requirement. Non-Final Act. 3--4;
Ans. 2--4. The Examiner determined the limitations
a first sensor processing unit, in communication with the main
processing circuit sensing a direction of movement of a first
user finger in each of three dimensions relative to the computer
input device ... indicative of the sensed three-dimensional
direction of movement of the first user finger ... a second
sensor processing unit, in communication with the main
processing circuit sensing a direction of movement of a second
user finger in each of three dimensions relative to the computer
input device ... indicative of the sensed three-dimensional
direction of movement of the second user finger ... a
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Application 13/530,659
communication having both the data indicative of the sensed
three-dimensional direction of movement ... the first signal
and the data indicative of the sensed three-dimensional
direction of movement
in claim 18 contain subject matter that was not described the
Specification in such a way as to convey reasonably to a skilled
artisan that the inventor had possession of the claimed invention at the
time the application was filed. Non-Final Act. 3. The Examiner
stated the Specification discloses swiping taking place in the X and Y
directions and/or tapping taking place in the Z direction but "this does
not rise to establishing input from the sensor being based in three
different dimensions." Id. at 4 (citing Spec. 4:12---6:2, 3 Fig. 1).
Appellant argues the Specification describes surface movements,
including finger taps and finger swipes, are reported to the sensory
subsystems 114L/114R. Appeal Br. 5 (citing Spec. 5:15-22). Appellant
further notes the Specification discusses that "any gesture" proximate to
computer input device 100 "is capable of being sensed and reported to a
computer." Id. ( citing Spec. 6:3---6). Appellant further contends "those of
skill in the art will understand that the described sensor subsystems must be
able sense motion in the three-dimensional space proximate to the device to
... distinguish between" the "swiping gestures ... made in an X/Y
direction" and "the tapping gestures ... made in a Z direction." Reply Br. 3;
see Appeal Br. 5.
3 The Examiner refers to paragraphs 14 and 15 of US 2012/0280912 Al.
Non-Final Act. 4. We will refer to the original disclosure throughout this
Opinion.
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Application 13/530,659
Appellant argues claims 18, 21-24, 27, 28, and 34--39 as a group.
Appeal Br. 4--6; Reply Br. 2-3. 4 We select claim 18 as representative. See
37 C.F.R. § 4I.37(c)(l)(iv).
ISSUE
Has the Examiner erred in rejecting claim 18 as failing to satisfy the
written description requirement under 35 U.S.C. § 112, first paragraph (pre-
AIA), by determining the above-quoted limitation is not described in the
Specification in sufficient detail that one skilled in the art can reasonably
conclude that the inventor had possession of the claimed invention?
ANALYSIS
Based on the record before us, we find no error in the Examiner's
rejection of claim 18. To satisfy the written description requirement, a
patent specification must describe the claimed invention in sufficient detail
that one skilled in the art can reasonably conclude that the inventor had
possession of the claimed invention. See Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
At the outset, Appellant acknowledges the Specification "does not use
the exact term 'three-dimensional movement[.]"' Appeal Br. 4. The
Specification describes optical sensor subsystem 114L/114R can "determine
direction, magnitude, and/ or speed of movement of the surface relative to the
computer input device 100." Spec. 5:12-14, Figs. 1-2. The Specification
4 In both the Appeal Brief and the Reply Brief, Appellant refers to claims
12-17. Appeal Br. 4; Reply Br. 2. We presume Appellant intended to refer
to pending claims 18, 21-24, 27, 28, and 34--39 and hold the error harmless.
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Application 13/530,659
states "the surface movement information reported back by the sensor
subsystems 114 L/114 R can be representative of finger gestures, such as
finger taps, fingers swipes, etc.[,] proximate to one or both of the left and
right sides of the computer input device 100." J d. at 5: 15-18. As indicated
by the Examiner (Non-Final Act. 4), one skilled in the art would have
understood these described gestures are movements in two-dimensions ( e.g.,
finger swipes in the X-Y direction) or in one-dimension ( e.g., finger taps in
the Z direction). Thus, because the Specification discusses sensing finger
movements in all three dimensions (i.e., X, Y, and Z), the Specification
supports the recitation "a first integrated touchless sensor subsystem ... in
communication with the main processing circuit sensing a direction of
movement of a first user finger in each of three dimensions relative to the
computer input device occurring in spaced proximity to the computer input
device" in claim 18. Appeal Br. 9 (Claims App'x) (emphases added).
However, we disagree with Appellant that the Specification further
describe in sufficient detail, claim 18 's recitation
a first integrated touchless sensor subsystem in
communication with the main processing circuit . . . providing
to the main processing circuit a first signal having data
indicative of the sensed three-dimensional direction of
movement of the first user finger relative to the computer input
device occurring in spaced proximity to the computer input
device
and the similar recitation concerning "a second integrated touchless sensor
subsystem." Id. ( emphasis added). That is, one skilled in the art reading the
above passages in the Specification would have concluded the inventor at
best had possession for sensing finger movement ( 1) in each of three
dimensions (e.g., X, Y, or Z) and (2) in two-dimensions (e.g., X-Y
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movements of a finger swipes) relative to the input device, but would not
have concluded the inventor had possession for the recited "sensed three-
dimensional direction of movement of the first user finger relative to the
computer input device" in claim 18.
To be sure and as Appellant indicates (id. at 5), the Specification
further states a "computer can be programmed to map any sensed gesture(s)
to any action on the computer" (Spec. 6:5---6 (emphasis added)) and includes
"etc." when providing examples of finger gestures (Spec. 5: 17). Examples
of these gestures include: (1) "a simultaneous double tap gesture being
performed on both sides of the computer input device 100," (2) "double
swipe down gesture performed on at least one side of the computer input,"
and (3) "a tapping gesture being performed on the right side of the computer
input device 100 with a surface being sensed as being anchored on the left
side of the computer input device 100." Spec. 6:8-9, 12-13, 16-18. Yet,
like the above discussion, the Specification's description of these sensed
gestures, at best, constitutes sufficient detail for one skilled in the art to
conclude reasonably that the inventor had possession of sensing a finger's
two-dimensional direction of movement ( e.g., a downward swipe).
Based on the above description, Appellant contends that "those of
skill in the art will understand that the described sensor subsystems must be
able sense motion in the three-dimensional space proximate to the device to
thereby, at a minimum, distinguish between these different types of
gestures." Reply Br. 3. This contention merely constitutes unsupported
attorney argument. It is well settled that such conclusory arguments cannot
take the place of factually supported objective evidence. See In re Huang,
100 F.3d 135, 139--40 (Fed. Cir. 1996). Also, as previously noted, the
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Specification may suggest other gestures or "direction of movement" as
recited can be sensed. See Spec. 5: 17 (stating "such as finger taps, finger
swipes, etc."), 6:5 (stating "any sensed gesture(s)"), 6:6 (stating "[b ]y way of
example only")). But, even if the Specification and its examples suggest the
obviousness of sensing "three-dimensional direction of movement of the
first" or second finger "relative to the computer input device" as recited in
claim 18, this suggestion does not establish sufficiently that the inventor had
possession of this claimed invention. See Ariad, 598 F.3d at 1352 (stating "a
description that merely renders the invention obvious does not satisfy the
[written-description] requirement") ( citing Lockwood v. Am. Airlines, 107
F.3d 1565, 1571-72 (Fed. Cir. 1997)).
Lastly, we acknowledge the Examiner has withdrawn the lack of
written description rejection under 35 U.S.C. § 112 for similar claims in U.S.
Application 12/361,072, which has been appealed and assigned Appeal No.
2018-004110. See Reply Br. 2. We further agree with Appellant that the
position taken by the Examiner in this application contrasts with that taken
in U.S. Application 12/361,072. The Examiner has not explained the reason
for withdrawing the rejection. See U.S. Application 12/361,072, January 11
2018 Examiner's Answer 21. 5
Even so, in the patent examination context, the Examiner has a duty to
perform a "complete" examination. See 3 7 C.F .R. § 1.104( a); cf In re
Wertheim, 541 F.2d 257,264, 191 USPQ 90, 97 (CCPA 1976) ("[I]t is
5 Also, although withdrawing the rejection, the Examiner repeats the
withdrawn rejection in its entirety. See U.S. Application 12/361,072,
January 11 2018 Examiner's Answer 2--4.
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immaterial in ex parte prosecution whether the same or similar claims have
been allowed to others.").
For the above reasons, Appellant has not persuaded us of error in the
rejection of independent claim 18 and claims 21-24, 27, 28, and 34--39,
which are not argued separately.
THE OBVIOUSNESS REJECTION OVER HINCKLEY AND LOW
Claims 18, 21, 22, 24, 27, 28, and 34--39 are rejected under 35 U.S.C.
§ 103 as unpatentable over Hinckley (US 6,559,830 Bl, issued May 6, 2003)
and Low (US 2004/0046741 Al, published Mar. 11, 2004). Non-Final
Act. 5-30. Regarding independent claim 18, the Examiner finds that
Hinckley discloses all recited elements except for the recitations related to
"three dimensions" and "three-dimensional direction of movement." Non-
Final Act. 5-8. The Examiner turns to Low in combination with Hinckley to
teach and suggest the noted limitations missing from Hinckley. Id. at 8-12.
Among other arguments, Appellant contends "Low describes a system
in which sensors are used to monitor nothing more than two-dimensional
movement of an object occurring in spaced proximity to the housing."
Appeal Br. 6
ISSUE
Under § 103, has the Examiner erred in rejecting claim 18 by finding
that Hinckley and Low collectively would have taught or suggested
a first integrated touchless sensor subsystem ... in
communication with the main processing circuit ... providing
to the main processing circuit a first signal having data
indicative of the sensed three-dimensional direction of
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Application 13/530,659
and
movement of the first user finger relative to the computer input
device occurring in spaced proximity to the computer input
device
a second integrated touchless sensor subsystem ... in
communication with the main processing circuit ... providing
to the main processing circuit a second signal having data
indicative of the sensed three-dimensional direction of
movement of the second user finger relative to the computer
input device occurring in spaced proximity to the computer
input device[?]
ANALYSIS
Based on the record before us, we find error in the Examiner's
rejection. In our previous decision, Appeal No. 2015-007943, mailed
May 10, 2017 ("Dec."), we determined that Hinckley and Low collectively
would have taught or suggested first and second touchless sensors sensing "a
direction of movement of' a first and second finger respectively "relative to
the computer input device." See Dec. 5-9. In this regard, we stated
"Hinckley's sensors do not sense finger movements, but rather only sense
when a finger is proximate to the sensor." Id. at 6-7 ( citing Ex parte
Westphal, No. 2013-010168, slip op. at 66 (stating the sensors only sense
that a user's finger is "within range of the sensor," but "do[] not monitor the
user's actual movement") (citing In re Man Machine Interface LLC, 822
F.3d 1282, 1286-87 (Fed. Cir. 2016)); see Appeal Br. 6 (noting we
determined "Hinckley only discloses sensors that function to sense
6 The decision is available at
https://efoia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd20130101
68-06-20-2016-1.
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Application 13/530,659
proximity."). However, we found Low teaches what was missing from
Hinckley, and Low's teaching, when combined with Hinckley, would have
taught or suggested sensors sensing "a direction of movement" of the fingers
relative to a computer input device. Dec. 7-9 (citing Low ,r,r 26, 31-33, 39,
41, Figs. 1-2, 3E).
Now, we consider whether this same combination further teaches
sensing "three-dimensional movement" of the first and second fingers as
recited. Appeal Br. 9 (Claims App'x). The Examiner relies on many of the
same passages in Low to teach the claimed feature. Non-Final Act. 8-11
( citing Low ,r,r 23, 31-33, Figs. 1-5). More specifically, the Examiner
contends Low teaches sensing (1) positional data ( e.g., X and Y) when a
finger is moved across touch pad 26's surface, and (2) command data when
a finger taps touch pad 26's surface (e.g., an added dimension). Id. at 9-11.
For the below reasons, we disagree that these teachings would have
suggested sensors that provide a signal having data "indicative of the sensed
three-dimensional direction of movement of the" first and second finger
"relative to the computer input device occurring in spaced proximity to the
computer input device" as argued by Appellant.
Low teaches producing command data when a finger taps on touch
pad 26. Low ,r 23, Fig. 1. As discussed above in the context of the written
description requirement, a sensed tapping movement detects a movement in
one direction or dimension (e.g., Z direction). See id. Low also teaches
sensing a finger moving in the direction of arrow 35 or another direction or
dimension. Id. ,r 31, Fig. 2. Low further discusses sensors 38 can "detect
the position of the finger 34 as [it's] moved over the active surface 32" (id.),
including "the positional data ( e.g., X and Y)" (id. ,r 33), and signals "may
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Application 13/530,659
be used to determine the direction [and] position ... of the object as [it's]
moved around the active surface 32" (id. ,r 32). At best, Low describes
monitoring two-dimensional movement ( e.g., X-Y) so as to provide a signal
indicative of two-dimensional movement of an object.
Low's Figures 3A through 5 also show sensors that detect "direction
of movement" at best in two-dimensions, but not "three-dimensional
direction of movement" as claim 18 requires. See id., Figs. 3B, D ( showing
detecting movement in one-dimension direction), 3E (showing detecting
movement in another dimensional direction); see Appeal Br. 6 (stating Low
describes a sensor "used to monitor nothing more than two-dimensional
movement of an object occurring in spaced proximity to the housing")
(citing Low ,r,r 33, 38--40). Although Low may teach or suggest sensors that
sense two-dimensional direction of finger movement ( e.g., X and Y), the
Examiner does not point to a teaching in Low that further suggests a sensor
detecting all three movements or directions (e.g., X-Y-Z) such that the
sensor provides a first signal "indicative of the sensed three-dimensional
direction of movement" of a finger relative to a computer input device as
recited. See Non-Final Act. 5-12.
As such, Low does not teach or suggest its sensors "provid[ e] ... a ..
. signal having data indicative of the sensed three-dimensional direction of
movement" of the first or second finger "relative to the computer input
device occurring in spaced proximity to the computer input device" as claim
18 requires. Moreover, even when combining Low's teaching with
Hinckley, the combination does not teach or suggest the above noted
limitations in claim 18.
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We, however, note as stated in our decision for Appeal No. 2013-
010168, mailed June 22, 2016 ("10168 Dec.") that
Roland® Synthesizer SH-201 Owner's Manual (2006)
("Roland") discusses a "computer input device" namely a music
keyboard adapted to send data to a computer, where the
keyboard includes an optical sensor that monitors user
movements relative to a housing. See Roland 2, 7, 20-21
( discussing moving a hand above a sensor to control settings,
such as pitch, volume, or brightness) ....
10168 Dec. 7. We add that the figure entitled "The usable range of the
D Beam controller" in Roland shows a touchless sensor sensing various
dimensional direction of hand movement ( see gray area in space) relative to
a computer input device and in spaced proximity to the device. See Roland
20. We leave any determination to the Examiner whether this reference
teaches the "three-dimensional direction of movement" of a first or second
finger relative to a computer input device occurring in spaced proximity to
the device as claim 18 recites. 7
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (1) independent claim 18 and (2) dependent claims 21, 23, 24,
27, 28, and 34--39 for similar reasons.
7 Regarding Low's finger taps, Appellant contends Low only teaches sensing
the finger touching a touch pad's surface and not sensing movement "in
spaced proximity to the computer input device" as recited. Appeal Br. 7. In
this regard, Hinckley teaches an embodiment of a touch sensor that can
sense "when the user is sufficiently proximate the sensor" (Hinckley 5 :34--
37) or "in spaced proximity to the computer input device" as recited. See
10168 Dec. 5---6 .
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THE REMAINING OBVIOUSNESS REJECTION
Claim 23 depends from claim 18 and is rejected under § 103 based on
Hinckley, Low, and Bohn (US 2003/0006965 Al, published Jan. 9, 2003).
Non-Final Act. 30. Accordingly, we do not sustain this rejection for reasons
similar to those previously discussed concerning claim 18.
DECISION
18, 21-24,
§ 112, first 18, 21-24, 27,
27,28,and
paragraph 28, and 34--39
34--39
18, 21, 22, Hinckley and 18, 21, 22, 24,
24, 27, 28, § 103 Low 27,28,and
and 34--39 34--39
23 § 103
Hinckley, Low,
23
and Bohn
Summary
18, 21-24, 27,
28, and 34--39
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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